Negotiations on the Agreement were concluded in early December 2013, and the legally verified text was initialled by Chief Negotiators on 10 February 2014. It is anticipated that the agreement will be formally signed in the coming months.

The full Agreement consists of 23 chapters with various annexes and schedules, plus four side letters. Chapter 11 covers intellectual property aspects of the Agreement, which is the only part of the document I have read in any detail. It is important to bear in mind, however, that no part of the Agreement exists in isolation. Picking just one chapter and weighing up the potential gains and losses to either party is therefore not an entirely meaningful exercise. Other parts of the Agreement reportedly deliver some major trade benefits to Australia, for example the immediate lifting of 300% tariffs on chipping potatoes, a phase-out over three years of a 500% tariff on bluefin tuna (though this may not be such good news for the tuna), and a phase-out over 15 years of beef tarriffs currently set at 40% to 72%.

The IP aspects of the KAFTA are, for the most part, not particularly unexpected and, with the notable exception of certain copyright provisions, unlikely to require legislative changes in Australia. Unfortunately, it appears that the Agreement will oblige Australia to introduce the kind of ‘graduated response scheme’ to curtail repeated instances of online copyright infringement that I described just last week as ‘stupid’.

Additionally, the copyright provisions may limit Australia’s ability to introduce ‘technology neutral’ legislation that does not distinguish, for example, between products and cloud-based services for recording and/or time-shifting broadcast programs. These provisions might also prevent the introduction of a ‘broadcast-to-internet conversion’ service, such as that controversially provided by Aereo in a number of US markets.

It is possible that the reason for this is that IP laws have impacts across a very broad range of policy areas, including industry, innovation, manufacturing, education, science, research, healthcare and international relations, to name but a few. Perhaps people do not form views on IP per se, but rather upon the role it plays in the areas about which they are most passionate.

Over this period, there were two changes in leadership in Australia. In June 2013, Prime Minister Julia Gillard was deposed by Kevin Rudd, while in September there was a Federal election which resulted in a switch to the current Liberal-National Party (LNP) government under Tony Abbott.

In my first article of 2014, I speculated about whether there would be some progress on this review, or whether it would simply be set aside by the new government. It seems we now have an answer to that question.

Such proposals are, in my view, utterly wrong-headed, and serve only to demonstrate the extent to which the Australian government is beholden to (mostly foreign) content owners, at the expense of (Australian) consumers.

Not having anything much to do with patents, this might seem an unusual topic for this blog. But there is a significant innovation angle to this story, because the intended purpose of such alleged ‘enhancements’ to copyright enforcement options is to protect out-dated business models employed by content owners and distributors in the face of rampant technological change. And what consumers really need is not a raft of new ways to be punished for making use of new technologies, but rather the development of new business models that harness the capabilities of those technologies to provide us with greater convenience and choice.

The fact is that the really big content owners and producers, i.e. primarily US studios, and their local distribution arms, do not want their existing business structures to be disrupted by disruptive technologies. They would much rather persuade governments to introduce new laws to counter the inevitable consequences of their refusal to change.

09 February 2014

Anybody who works as a patent attorney for any length of time discovers that there is no shortage of people who are perfectly happy to bend the truth a little in order to achieve their objectives. In the case of patents, such liberties with the facts tend to relate to matters of inventorship and ownership of patent rights.

A case recently decided by the Federal Court of Australia, Neobev Pty Ltd v Bacchus Distillery Pty Ltd (Administrators Appointed) (No 3)[2014] FCA 4, perfectly illustrates this point. Here, a patent for an invention made by one person (Mr Scott) was filed and granted naming an additional inventor (Mr Hajdinjak) because he ‘wanted his name on the patent’. Furthermore, the patent is registered in the name of one owner (Bacchus) even though, in truth, the rights are co-owned by Mr Scott’s company, in order to better satisfy the requirements for Bacchus to receive a government grant to assist in commercialisation of the invention.

The true circumstances have come to light because Bacchus got into financial difficulties and was placed in administration. The administrators propose to sell the business, and the associated intellectual property along with it. Neobev, which now owns all of the rights previously held by Mr Scott and his company, is disputing the administrators’ entitlement to do this – or, at least, to do it without obligating any purchaser to pay royalties to Neobev under an existing agreement with Bacchus.

The situation is something of a mess, which has cost the parties time and money to resolve in the Federal Court. The reason for the mess is that the people involved cut corners and did as they pleased when times were good, without regard to what would happen if the circumstances were to change in the future. The one fortunate aspect of the case is that Australia is not one of those jurisdictions in which incorrect recording of inventorship or ownership is, in itself, fatal to the validity or enforceablity of a patent.

In this case, the court has now ordered (Neobev Pty Ltd v Bacchus Distillery Pty Ltd (Administrators Appointed) (No 4)[2014] FCA 21) that the Register of Patents be rectified to show Mr Scott as sole inventor. The court has also found that, despite Bacchus being recorded as the sole owner of the patent in question, in reality it is holding the patent in trust on behalf of itself and Neobev as joint beneficial owners. For now, the Register will not be amended to show this joint ownership, because there is no actual error requiring correction in the trustee being recorded as legal owner, and to record joint ownership would effectively terminate the trust and distribute its property 50/50 between Bacchus and Neobev. The court was unwilling to do this when it had not heard evidence on the nature of the trust, or considered the relevant state laws in relation to the trust and the powers of the trustee.

08 February 2014

I want to be clear from the outset that this article is not about the social and/or financial advantages that are no doubt enjoyed by some members of the patent attorney profession! The ‘privilege’ I wish to discuss is the legal professional privilege which protects communications between legal professionals and their clients, along with related records and documents, from compulsory disclosure by order of a court, or under a provision of statutory law.

While most (outside the legal profession, at least) would regard patent attorneys as legal professionals, the fact is that we are not lawyers. For the most part this does not create any problems, and in fact can be handy when we want to avoid bearing the brunt of lawyer jokes at parties. (‘What does a lawyer get when you give him Viagra?’ ‘Taller!’)

However, not being lawyers means that communications between patent attorneys and their clients do not automatically have the benefit of any privilege that would attach to the same communication if it were to occur between lawyer and client. Citing authorities dating back as far as the 1880s, a Federal Court judge stated in 1993 that ‘[t]here was no such privilege [in respect of patent attorney-client communications] at common law. Indeed, communications between a client and his solicitor who was also the client's patent attorney were not privileged if the solicitor received them in his capacity as a patent attorney…’ (Wundowie Foundry Pty Ltd and Clarewood Pty Ltd v Milson Foundry Ltd and David Wallace[1993] FCA 422).

This is clearly a problem. Patent attorneys regularly communicate with their clients, and provide advice, in relation to matters that could be highly prejudicial in the event of litigation including, but not limited to, validity and infringement of patents. In the absence of an effective attorney-client privilege, clients might be discouraged from providing their attorneys with information necessary for them to provide full and considered advice, and attorneys in turn might decline to provide advice that may be adverse to the client in the event of litigation.

Australia scored pretty well, coming in fifth out of the 25 countries covered by the index, behind only the US, UK, France and Singapore. However, on closer inspection this is probably not something of which we should be especially proud. While the GIPC index is touted as a measure of how well each country safeguards IP to ‘propel the creation of jobs, protection of public safety, access to future innovations, and stimulate competition in the global economy’, it might better be described as a measure of how cravenly each country kowtows to the interests of the US enterprises represented by the Chamber of Commerce.

For example, a country can gain points for entering into a free trade agreement, such as the Australia-US FTA, or by providing an extension of term for pharmaceutical patents as compensation for the time taken to obtain regulatory approval. However, countries were scored down for such infractions as failing to provide ‘adequate’ criminal penalties for IP infringement.

However, Australia’s greatest crime against the GIPC criteria was the introduction of legislation mandating ‘plain-packaging’ (actually, restricted branding, since the packs are far from plain) of tobacco products. Apparently, this one limitation on trade mark use in Australia sends ‘a chilling message to brand owners interested in selling in the Australian market’, and resulted in a loss of a whole point in the index, which would have placed Australia above Singapore, in fourth place!

01 February 2014

Are you a patent attorney working in the life sciences sector? Would you be interested in new research insights into international patent filing strategies for biotechnology and pharmaceutical companies? And – most importantly – would you be willing to spare just 15 minutes to complete a short survey to assist researchers at the Thomas Jefferson School of Law to obtain those research insights? If so, please read on…

I was contacted this week by Richard Schurman, who is one member of a team led by TJSL Adjunct Professor Randy Berholtz engaged in a year-long IP Honours Research Project with the goal of assisting bio-pharmaceutical companies and patent practitioners in deciding which countries to file for patent protection. (Richard is second from the left in the above photo. The other pictured are, from left to right, co-researchers Derek Midkiff, Sumant Pathak, Katherine MacFarlane and Vince Davies.)

The goal of the honours research project is to provide life science companies and patent practitioners with a comprehensive guide regarding the countries where biopharma patents are filed, the countries where life science companies and patent practitioners should file for patent protection, and the factors that life science companies and patent practitioners should take into consideration when strategizing for international patent protection.

The project includes a survey of practitioners, for which each member of the team has taken on a different region of the world. Richard is responsible for the Asia-Pacific region, which of course includes Australia and New Zealand.